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Why Action should be Delayed on 

SENATE BILL 300. 

INVENTORS ASK TO BE HEARD 
BEFORE THE 

^ / PATENT LAWS 

ARE AMENDED. 



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To the Honorable the Members of the House of 
Representatives Assembled, 
Respectfully submitted. 

[Extracts from the Scientific Amekican.] 

The New Patent Bill as Passed by the Senate. 

An Act to amend the Statutes in relation to Patents (Senate Bill 
300) has been passed by the Senate, and is now before the House of Rep- 
resentatives for its approval. As the adjournment of Congress is fixed 
for the 4th of March, the bill must soon be acted upon, or it will go over 
to the next Congress. The bill as it stands, while it contains some very- 
excellent provisions, presents others that are very obnoxious ; and unless 
the bad points can be eliminated we hope the subject will be postponed 
for the consideration of the new Legislature. 

We will briefly recapitulate what to us appear to be the leading 
designs of the present bill, with a few words of running comment. In 
all there are 25 sections. 

Sec. 1 provides that damages shall not be recovered for infringe- 
ments that were alleged to have taken place more than four years prior 
to the commencement of the suit. 

As the law now stands the owner of a patent may sue infringers at 
any time when he can find out that an infringement has taken place. But 
under the new provision, if the infringement is concealed or in any way 
escapes the knowledge of the patentee for four years, he has no remedy, 
and the infringer goes free. This section is an encouragement to infrin- 
gers, is an injustice to patentees, and should not be passed. 

Sec. 2 takes away from the inventor, substantially,- the control and 
exercise of the patent for his own invention, and gives away to others 
the right to use the patent, against the consent of the patentee, for a 
price not agreed to by him, but fixed by people adverse to him, by means 
of the formalities of a Court. 

The existing law vests the exclusive proprietorship of the patent in 
the inventor, during the brief period of 17 years for which it is granted. 
This is one of the most satisfactory provisions of the present statute, and 
should be carefully preserved. If the new provision passes no man can 
hereafter say that he " owns " a patent. He will simply own a certificate 
showing that somebody else has the right to make use of the products of 
the inventor's ingenuity without so much es asking his leavd. 

^ Sec. 3 provides that if the inventor has the hardihood to bring a suit 
against an infringer, and clearly proves the infringement, should the in- 
fringer then wriggle around and debar the inventor from getting a judg- 
ment for a sum less than twenty dollars, then, in that case, the inventor 
shall pay his own costs of the suit and also the infringer's cost. 



This section practically imposes a heavy fine upon an inventor for jtt- 
tempting to stop infringements. 

Sec. 4 gives conditional privileges to infringers to continue their in- 
, fringements after a verdict is rendered against them during the pendency 
of their appeals. 

Sec. 5 gives to infringers the privilege of procuring the removal of in- 
junctions, so that they may continue to infringe. 

Sec. 6|provides that no reissue shall be granted unless applied for within 
seven years from the date of the patent. 

The present law permits the inventor to correct his patent by reissue at 
any time during the life of the patent; this is an excellent provision, and 
; tends to give value and vitality to property in patents. The provision of 
the new law assists and encourages the infringer. 

Sec. 7 provides that if an inventor's specification happens at first to be 

so defective that an infringer can make and use the device without 

'liability, the said infringer may always continue such use, without pay- 

. ment to the inventor, even after the latter procures a reissue with properly 

corrected specification and claims. 

Under the present law, if the original patent is found defective, and 

th« claims insufficient to prohibit infringements, the inventor may at any 

time obtain a reissue, which shall be good for the remaining term of the 

patent, during which remaining term infringers must pay damages. The 

.new provision aids and supports infringers throughout the entire term of 

. the patent, and prohibits the inventor from recovering damages. 

Sec. 8 provides a remedy where two persons have unwittingly taken 
A patent in their joint names, when only one of them was the real 
inventor. 

Sec. 9 provides for the taking of testimony relating to patents, 
, which may be stored away and used in new cases after the witnesses are 
dead and gone. 

This appears to be another of the many provisions of the bill 
' intended to assist infringers. 

Sec. 10 provides that infringers may bring suits to have patents 
.j declared void. 

This provision appears to be intended to help infringers in breaking 
. 4o^^i patents that stand in their way, but which belong to poor inventors 
... W^ cannot defend such suits, or patents granted to those who are absent 
I or deceased. 

Sec. 11 requires that patentees who have requested infringers to 

stop such infringement, shall commence suits for damages within a 

reasonable time; otherwise the infringer may continue the infringement 

, during the entire term of the patent, without liability to the patentee. 

c^,. The majority of patentees are poor people, who in many cases have 

, ■■iiot the means to bring suits against infringers, and all they can do is to 

'r request the latter to desist or pay royalty; reserving until a future time, 

ivhen their means admit, the bringing of suit. 
,.r;. The law, as it now is, permits a poor man to bring his suit for 
^.infringement whenever he desires. The new provision appears to be 
; aimed against the inventor, and in favor of the infringer. 

, , Sec. 12 provides that patent fees shall hereafter be paid as follows: $35 
■ , .on the issue of the patent, $50 in four years thereafter, and $100 in nine 
(years thereafter; total, $185 for each patent. Failure to pay either of 
f,,,tjie two last fees nullifies the patent. 

/ r Under the present law the fee for a patent is only $35. No other taxes 
or penalties are imposed. The proposed law introduces the European 



system of multiple taxes, and imposes a heavy burden upon the ijventor. 
This subject will be found more fully discussed in another paai. of our 

^^^^Sec 14 regulates the issue of licenses by joint owners and patentees. 
16 provides punishment for fraudulent or deceptive conveyances of patent 
rio-hts 16. Commissioner and assistant to give bonds. 11. Prices of 
printed copies of patents authorized to be increased. 18 relates to cer- 
tified copies of patents. 19 relates to payment of final fee m allowed 
oases 'lo regulates issue of patents for inventions previously patented 
in foreign countries. 2 1 permits full owners of patents to obtam reissues 
in their own names. 22 regulates the renewal of lapsed allowed cases 
-. 03 regulates the stamping of date, of patent on patented articles. 24 
regulates the issue of patents in interference cases. 25 repeals all con- 

" ^'xhTre^edy proposed by this bill is worse than the disease. It is un- 
fair to enact a law like this, which in so many of its principa provi- 
sions is designed to sweep away from inventors all personal benefits from 
the fruits of their ingenuity, and bestow them, free of charge, upon m- 
fringers. 

< m 0--^ — » 

The License Fee as a Measure of Damages. 

During the debate on the 1 6th ult., in reference to the second session 
of Senate bill No. 300, Senator Conkling quoted the familiar aphonsm 
that "everybody knows more than anybody," and he added: ihe 
ablest committee in this body, or any other, may sit and listen to attor- 
neys representing somebody else, and come to a most conscientious and 
intelligent conclusion, and still, in a matter so complex as this, it is more 
than likely that, when the converging rays of a great many mm ds are 
turned upon that subject, new considerations and^^new thoughts may be 
suggested, which it is well worth while to utilize." , ^ 

The remarks of the distinguished New York statesman lose none of 
their pertinency from the fact that the arguments before the committee 
were almost wholly by eminent barristers retained for that purpose by 
; associations more or less inimical to patents. , , .^ ,, . , v .n 

It is observable that advocates and apologists of the Wadleigh bill- 
perhaps conscious of the fallacious character of their conclusions— seem 
' desirous to subordinate legislation to such mere judicial fictions and tech- 
. nicalities of the forum as that which finds it necessary to regard the m- 

- fringer of a patent as a " trustee," before the rights of recovery of profits 
can be adjudged against him; and the fiction which would exalt the 
license fee from its position as one of several tests of value to be the-jb- 

. solute " measure " of compensation to the defrauded patentee ; thus 

- placing the clandestine user on a level with the hcensee, and arbitrarily 
fixing the price at which the private property of one man may be appro- 
priated by any other. ' . , . . ,, ^ ^. ..^ 

Instead of the procrustean rules with which it is sought to tie the 
hands of tribunals, much better would be the mode recommended by 
Senator Matthews, who, in closing the debate, remarked: 1 am ot 
opinion that every avenue of evidence ought to be kept open, tor proot, 
in each individual case, according to its circumstances, and that the 
amount in such a case should be reasonable and fair, and that that should 
be left absolutely, upon that evidence, to the discretion of the tribunal 
charged by law with the finding of such a verdict or the making of such 



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a decree, without any restraint, without any artificial rules to bind that 
discretiotl, without shutting out any light; so that every fact anreverv 
circumstance which is material and important to the determination ofthe 
question shall be permitted to be proved." 

Now, is not the much insisted rule of the license fee, as the absolute 
measure of damage or profit, directly in conflict with the Ohio Senator's 
well stated principle of action ? Does not the drift of reasoning that 
prescribes such a ru e virtually destroy the " exclusive " attribute which 
the Constitution makes inherent in the franchise? 

It is conceded by Mr. Christiancy that the right, so lon^ as it 
remains wholly m the hands of the inventor, is his, to do as he pleases 
with, as much so as the right of possession in a mine or a field ; nav 
more, that, in such a close monopoly, the patentee is entitled as a measure 
ot damage against an infringer, to the entire usufruct or beneficial results 
of his improvement, although such results are very well known to be 
otten manifold the amount of the customary license fee 

The sometimes relative insignificance of the license fee is well known 
to be attributable to the anxiety of the patentee-before many months of 
his brief franchise have slipped away— to get the manufacture into the 
hands ot competent men, and, in order to accomplish this, and that the 
device may fight its way against the vis inertice of routine and preiudice 
and reach early and extensive sale, the patentee is willing to forgo a verv 
large proportion— often exceeding nine-tenths of the actual benifit He 
is wilhng to surrender so much to the legitimate manufacturer and to the 
public, but not one cent to the marauder. 

Now apart from questions of justice, apart from questions of con- 
stitutional right, can any one doubt that it is for the public interest that 
the patentee should be encouraged to relax somewhat of this strict mono- 
poly, should be permitted, without let or hinderance, to select the mode 
the agents, and the places in which and by whom his franchise shall be 
utilized i 

An illustration may be cited familiar to many. Some twenty-five 
?^ w ^ J^^''\^^'' *^^ manufacture of tongued flooring was subject to 
the Woodworth patent. This manufacture, in Hamilton County Ohio 
was restricted to fourteen mills, of which each paid to the patentee a stip- 
ulated annuity of $1,000. The ability of these licensees to undertake 
the manufacture rested implicitly on the patentee's guarantee as to the 
maxmiiini number of mills. Now what would have become of their con- 
tracts and of the business founded on those contracts, if any trespasser- 
say, a wealthy building association— could have stepped in and defied 
u^ ?/^u*T ^""^ ^^^ honQ^i licensees, in the assurance that Justice- 
should she be invoked— could at most but adjudge the license fee as the 
reasonable compensation for the tortious use ? 

The frequent, somewhat promiscuous disposal of their rights at al- 
most nominal figures, by necessitous or unthrifty inventors, does not as 
some would have us believe, necessarily imply a total surrender to the 
pubhc at a given price, nor does it invest any one with the liberty to ap- 
propriate such right on the terms thus granted to others, or anv terms • 
nor does Congress, nor all the tribunals between the two oceans, step in 
between the humblest patentee that can be cited by Senator Christiancv 
and that patentee's " exclusive " property in his own invention 

As the patentee of a valuable device, jealous of the reputation of 
this offspring of my brain, and regardful of the interests of those who 
may, with my consent, have undertaken its manufacture, can I be denied 
the exercise of my own discretion in the selection of licensees ? Would 



not they, and miglit not even the public, be best served by my doing so? 
Well, now, what becomes of this option, if any irresponsible party may 
step in and manufacture my device on no royalty at all — for many pat- 
entees are unable to incur the expense of a patent suit, and with the 
further assurance that, in the event of prosecution, the measure of com- 
pensation is the ordinary license fee? 

Gentlemen who concede my exclusive right to my invention in its 
integrity so long as I confine the manufacture to my own attie, and that 
even to the extent of the entire benefits, usually manifold the amount of 
an ordinary license fee, will scarcely allege that the interests of the com- 
munity are subserved by such a narrow policy. But does not the pro- 
posed rule offer a premium for just such a policy ? 

Gentlemen call this a Statute of Repose. Truly, of repose with a 
vengeance — the Repose op Death ! 

Geo. H. Knioht. 
Cincinnati, January 23, 1879. 



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